Protecting IP?

The American Association of University Professors recently issued a draft report, seeking comment, on the topic “Defending the Freedom to Innovate: Faculty Intellectual Property (IP) Rights After Stanford v. Roche.”  The report is very interesting; a strongly-worded warning that universities might be trying to assert more ownership over the IP rights in works created by faculty as the potential monetary value of that IP continues to rise.  I want to make one comment about the report itself, and then use one of its significant themes to make some further observations.

By way of background, Stanford v. Roche was a patent dispute that was decided by the Supreme Court in 2011.  At issue was a diagnostic test for the HIV virus that was developed by a Stanford faculty member who worked both in a Federal-funded lab at Stanford and for a private biotech company.  Part of the problem was conflicting language in the two employment agreements — when he joined the Stanford faculty, Professor Holodniy agreed that he would assign the rights and title in his inventions to Stanford, but when he was employed by Cetus, his agreement “hereby” assigned those rights in anything he invented to Cetus.  The Supreme Court held that the immediate assignment in the Cetus contract overrode a promised assignment in the Stanford contract.  Along the way they rejected Stanford’s proposed interpretation of the Bayh-Dole act claiming that that Federal law required that Universities receiving Federal funds own the patents in inventions that came out of those labs.  Instead, the Court affirmed that eligibility for patent rights (they are not automatic) vests initially in the inventor and are then subject to assignments made by employment contracts.  Universities are allowed to own and exploit patents to inventions that arise from work done by their faculty under federal grants, according to Bayh-Dole, but they do not automatically own those rights under the legislation.  Since the Roche assignment was immediately effective, it trumped a promise to assign made in the Stanford contract.

The AAUP report focuses on the declaration that faculty own those inchoate patent rights, at least in the absence of a direct and immediate assignment to the university.  But it is important to recognize that Stanford v. Roche involved compete assignments of those rights, both of which were made as conditions of employment.

That is why I am troubled by the easy analogy that the AAUP report makes between patent rights and copyright.  It suggests in several places that ownership of copyrighted materials could be treated as employer-owned, just as Stanford was allegedly suggesting patent rights should be.  But the report doesn’t really offer much substance behind this threat, citing only a conflict of interest policy at the University of Pennsylvania, which has no bearing on copyright ownership, and an academic article written by some university attorneys.  Yet copyrights are really quite different.  Unlike patents, they arise automatically as soon as original expression is fixed in a tangible medium of expression.  Patent rights, on the other hand, require an application process that is long, costly and requires the specialized services of a patent lawyer.  It is odd to me that in the section of the report defining the different types of IP rights, this difference is not mentioned.

The reason this seems significant to me is because it provides a possible rationale for a university to make a claim over patents developed on campus, and that reason does not apply equally to copyrights.  When an invention developed on campus is patented, often the university invests significantly in obtaining those rights; unlike copyrights they do not simply arise directly as fruits of the research.  While copyrights really are just spontaneous developments from the direct tasks faculty are hired to do, patent rights are not, even if the inventions themselves are.  Patent rights cost money — often something over $20,000  — well beyond the investments made in the research itself.  So even if we accept the AAUP’s argument that the investment a university makes in supporting the research that leads to an invention should not automatically give that institution a right to share in any profits, the investment in actually obtaining the rights over that invention also needs to be considered.  And the fact that no similar costs are associated with copyrights provides a sound reason, in my opinion, for the normal differentiation, which is that institutions make no or limited claims over copyrights (as “work made for hire”) but assert a greater interest in patent rights, if they can be secured.

What really struck me about the report, however, and it is an emphasis I fully agree with, is its argument that both the universities and faculty research share an obligation to put scholarship in the service of society:

Patents are regularly used in industry to exclude others from using inventions.  But faculty members should often be focused instead on creating conditions that give the public access to inventions… Commercial development of university knowledge to stimulate economic growth is unquestionably good.  But some administrative practices associated with patenting and licensing operations may negatively affect economic growth as well as scholarship.

This is exactly right.  In both the patent and the copyright arenas, concern for social welfare and the maximum impact of scholarship on economic and cultural development should have pride of place in IP practices.  But in the copyright arena, we need to acknowledge that it is not usually institutional policies that undermine public access and economic development, it is the ingrained practice of giving copyrights away for free to commercial interest so that they can be exploited for private gain.  It is unfortunate that the AAUP does not take the next step in its logic and remind its members that making provision for open access is a vital part of the commitment that the Association encourages.

“[F]aculty members should often be focused instead on creating conditions that give the public access.”  To do this, faculty authors must move beyond the practice, tied as it is to centuries-old technology, of surrendering copyright without remuneration AND without any guarantee that the fruits of their research will actually reach those who could benefit most from them.

During this Open Access Week, I hope the AAUP will look at this obvious extension of the appeal it is making in its draft report.  University exploitation of patents may well be a threat to academic freedom and to public benefit, but so are the commercial companies that exploit the copyrighted products of academic labor for huge profits and lock up access to scholarship in order to defend those profits.  Universities are harmed by this system, scholars are harmed by it, and society is harmed by it.  The threats against which faculty IP rights need to be defended come from several directions, and the AAUP needs to recognize that.

Many people probably saw this story about a scientist who inquired about payment after she was asked to blog on a prominent scientific web site and was called a “whore” for declining to provide her writings for free.  There are troubling gender and racial dynamics behind this outlandish reply, of course, but it also strikes me as very telling about the attitude toward scholarship and the value of copyrighted work.  The expectation that scholars will give away their work for free is so ingrained that any suggested departure is treated quite rudely, to say the least.  The result is that faculty scholarship makes money for lots of people, but not for the authors (at least, not directly) and certainly not for their universities, who have to pay millions to buy back the work they supported in the first place.

If we stop and think about it, this is an offensive situation.  The remark of that blog editor has the salutary effect of illustrating just how offensive the routine expectations of publishers really are.  Scholars need to defend their IP rights, as the AAUP report calls on them to do, and that defense should start with a refusal to transfer their copyrights without much stronger assurances that their work will be available to provide the social, economic and scholarly impact for which it was written for in the first place.  Perhaps the AAUP could begin to organize that kind of response, in order to make good their commitment to public access and economic growth.